Claim Number: FA0704000967678
Complainant is Diners Club International Ltd. (“Complainant”), represented by Paul
D. McGrady, of
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <dinerscredit.com> and <dinercredit.com>, registered with Network Solutions, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Complainant submitted a Complaint to the National Arbitration Forum
On April 25, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 15, 2007 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to firstname.lastname@example.org and email@example.com by e-mail.
A timely Response was received in hard copy only on
A timely Additional Submission from Complainant was received on
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant is the owner of numerous registered trademarks for the DINERS mark throughout the world including US registered trademark DINERS mark, Registration Number 1,462,209 registered on October 20, 1987.
Complainant is the owner of numerous trademark registrations and pending applications for the trademarks DINERS, DINERS CLUB and DINERS CLUB INTERNATIONAL in jurisdictions world wide and has submitted a list of said registrations.
is a wholly owned subsidiary of Citgroup, a leading global financial organisation.
Complainant is a leading provider of financial services to individuals, small
businesses and large corporations. Its
core business is the provision of credit card services, credit card user
loyalty programs, assistance to travellers in the form of providing medical and
legal referrals, recovery or replacement of lost or stolen travel documents,
travellers checks, and credit cards and its registered trade marks are
primarily used in connection with such services. Credit cards issued by Complainant are
accepted at 800,000 ATMs and issued in 64 local currencies. Complainant has over
8 millions individual cardholders. Complainant has furnished details of the
extensive recognition and acceptance of its credit cards by businesses across
Complainant submits that both said domain names in dispute are identical and confusingly similar to Complainant’s DINERS trade mark.
Both of the domain names in dispute consist of Complainant’s DINERS trademark or a close misspelling of the mark together with the generic term “credit.” The addition of the generic term does nothing to distinguish said domain names from Complainant’s DINERS trademark nor does the addition of the .com extension.
registered the domain names in dispute on
Complainant submits that Respondent is a repeat cybesquatter. In previous NAF proceedings Diners Club Int’l Ltd. v. Spayne, FA 854291 (Nat. Arb. Forum Jan. 26, 2007), brought by Complainant against Respondent in relation to other domain names <dinerscreditanytime.com> and <dinerscreditclub.com>, the panel found Respondent to be engaged in cybersquatting in violation of Complainant’s DINERS CLUB trademarks and during said proceedings Respondent revealed the existence of the registrations that are in dispute in the present proceedings.
Addressing the <dinercredit.com> domain name registration: Complainant submits that Respondent uses said <dinercredit.com> domain name as the address of a web site with click through advertisements that promote credit card services that are directly competing with Complainant’s services.
Addressing the <dinerscredit.com> domain name registration: Complainant submits that Respondent has passively held this registration from September 2000 to April 2004. From April 2004 through to February 2005, it appears from information sourced from The WayBack Machine, that said domain name was used in conjunction with an advertising generator Oingo. Oingo is advertising generator that was also used in connection with the domain name registrations at issue in said earlier proceedings FA 854291. From at latest January 2006 through to the period of filing of said FA 854291 proceedings, it appears that Respondent established a website at the <dinerscredit.com> on which it posted the current content purporting to encourage visitors to barter services with restaurants in exchange for food. Complainant submits that this website and this posting is in fact a “pretext” site and is not a bona fide website.
Complainant submits that Respondent has no rights or legitimate interests in said domain names. Respondent has never been commonly known by said domain names. Respondent has never made any trademark or service mark use of any trademark that is identical or similar to said domain names, except for infringing use.
Complainant furthermore submits that Respondent has never operated any bona fide or legitimate business using either of the domain names in dispute. Respondent is not making any protected non-commercial or fair use of the domain names at issue, but has used said domain names to direct Internet users to competing or unaffiliated websites, and has subjected such users to a series of misleading links. The <dinerscredit.com> domain name is being used on a site that is purporting to give information but that is a mere pretext.
Complainant has not given Respondent any licence, permission or authorization by which Respondent could make any use of any of its marks and in fact has objected several times. All of Complainant’s objections have been ignored.
Complainant submits that both said domain names at issue were registered and are being used in bad faith. Both said domain names are identical or confusingly similar to Complainant’s DINERS mark and Respondent was undoubtedly aware of Respondent’s mark and reputation when the domain names were registered.
The disputed domain names are being used to intentionally attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorhip, affiliation, or endorsement of Respondent’s web site.
Alternatively Respondent is using said domain names to disrupt the business of Complainant being a competitor and/or to prevent Complainant from reflecting its mark in the domain names. Furthermore by registering multiple domain names containing Complainant’s marks Respondent has engaged in a pattern of such conduct.
Respondent’s submissions were unclear and rambling but were summarised
in the following terms in its letter dated
1. The website at <dinerscredit.com> has not caused harm to Complainant.
2. Complainant makes a malicious allegation by referring to the Respondent as a “repeat cybersquatter.” That statement is a defamation of character, and Complainant is attempting to use the National Arbitration Forum to certify this allegation.
3. The website established at <dinerscredit.com> has not caused harm to Complainant. It does not incorporate a purposely misspelled word. The domain name <dinerscredit.com> is not in any was a misspelling of the trademark DINERS CLUB INTERNATIONAL.
4. Respondent does not require permission from Complainant to create any links from its website. The domain name <dinerscredit.com> does not incorporate Complainants DINERS CLUB INTERNATIONAL mark.
5. Respondent is not engaged in cybersquatting or ransom and has not offered the <dinerscredit.com> website for sale to Complainant as would be the practice of a cybersquatter.
6. Complainant is seeking to monopolise a commonly known English word, “diners” typically used in everyday spoken language and print beyond the rights that it has in its trademark.
7. The word “diners” is generic and indistinguishable except when it is applied to Complainant’s famous trademark.
8. The word “diners” is used in other commercial business such as “Dinerscorp” and the Respondent has submitted a magazine article entitled “Diners Club” that refers to a group of friends that meet regularly to dine in different restaurants.
9. Complainant waited six and a half years to contest the <dinersclub.com> registration. Complainant is inconsistent in policing its famous trademarks having previously taken UDRP proceedings against a more recent and lesser known registration in Diners Club Int’l Ltd. v. Spayne, FA 854291 (Nat. Arb. Forum Jan. 26, 2007).
10. Complainant is choosing to attack lesser known websites to build its credibility incrementally so as to build a position where it could acquire the <dinerscredit.com> domain name.
11. Complainant is abusing the UDRP process by filing proceedings on dates that coincide with major holidays such as Christmas, New Year, Mother’s Day and so applying tactics intending to purposely hinder the filing of a timely Response. Respondent in particular runs “a minority restaurant” and is busy during holiday periods.
12. Complainant is engaged in a pattern of discrimination by singling out the lawfully registered websites of Respondent.
13. Complainant is attempting to use these proceedings to restrict the use of free speech. The word “diners” is common, trite and widely used in commerce.
14. The domain name <dinerscredit.com> should remain the property of Respondent as it is neither identical nor confusingly similar to Complainant’s trademark.
Regarding the timing of the Response, Respondent states that it requested a 20 day extension of time due to personal family medical reasons as well as the fact that Respondent runs a restaurant during holiday times. Respondent complains that it was only given a 10 day extension by National Arbitration Forum.
C. Additional Submissions
In timely Additional Submissions, Complainant submitted that the Panel should not admit Respondent’s submissions as neither document complied with procedures set in the Rules and in particular it appears from the copies sent to Complainant that Respondent’s letter dated May 11, 2007 was unsigned and should be given little or no weight.
In the event that the Panel should decide to admit and consider said Responses, Complainant made the following arguments on the substantive issues raised.
Complainant complains that the Respondent’s submissions are disorganised and difficult to follow.
Complainant rejects Respondent’s argument that DINERS is a generic term and asserts that it is a trademark recognised by registration in the USPTO.
Complainant rejects Respondent’s arguments that the domain names are not confusingly similar to Complainant’s DINERS mark. It is well settled that the addition of descriptive terms such as the word “credit” to a mark does nothing to distinguish a domain name from such mark.
Complainant asserts that Respondent is not entitled to rely on a defence of delay or “laches” in UDRP proceedings. In any event Respondent is factually incorrect since Complainant began enforcement of its rights against the domain names at issue shortly after learning of their existence during said proceedings Diners Club Int’l Ltd. v. Spayne, FA 854291 (Nat. Arb. Forum Jan. 26, 2007) taken against Respondent.
Respondent’s assertion that the registration and use of the <dinerscredit.com> domain name has not caused any harm to Complainant. Such assertion is not only false but it is also conclusory and unsupported by either argument or evidence. While there is no appellate authority regarding whether or not irreparable harm may be presumed in cybersquatting actions based upon a likelihood of success on the merits as there is in trademark infringement actions, several District Courts have addressed the issue and in Freedom Xalls Found v. Bukstel, 2006 U.S. Dist. LEXIS 19685 (D.N.Y. 2006) the Court found that “irreparable harm may be presumed for the Lanham Act cyber-squatting claim because the Plaintiff has shown a likelihood of confusion on the merits.” Such decisions based on trademark law are helpful by way of analogy in UDRP cases.
Respondent’s claim that Complainant demonstrates a pattern of discrimination is unsupported by either argument or evidence and there is no basis for any such claim in these proceedings either in fact or in law.
Respondent’s submissions are contradictory in relation to the nature of the <dinerscredit.com> registration. Respondent makes two factually inconsistent assertions viz. (1) that the <dinerscredit.com> domain name has been a “non-profitable website” and (2) that the Respondent “operates a minority restaurant for which <dinerscredit.com> is meant to help.” Complainant believes that the domain name <dinerscredit.com> has been used for advertising links in the same way that <dinercredit.com> is being used and in the same way that the domain names at issue in Diners Club Int’l Ltd. v. Spayne, FA 854291 (Nat. Arb. Forum Jan. 26, 2007) were used.
Complainant’s assertion that the statement on Respondents website is a pretextual construct, hastily posted when Respondent became aware of the dispute between the Parties, has not been denied by Respondent.
Respondent has challenged Complainant’s proof of ownership of the DINERS
mark. Complainant submits that there was
sufficient evidence of its ownership of said trademark filed with the Complaint
but for the sake of completeness Complainant has submitted a USPTO website
printout for together with a copy of the registration certificate issued in
Respondent has claimed that the DINERS mark has become generic through various uses on the Internet and Respondent has submitted examples of such use in its various exhibits. An examination of the materials submitted by Respondent shows that the overwhelming number of results generated in Internet searches against the term “diners credit” refer to Complainant’s services.
The Panel makes the following findings of fact:
Complainant is the owner of US registered trademark DINERS mark Registration Number 1,462,209 registered on October 20, 1987 in international class 36 in respect of “credit card services” and numerous other registrations throughout the world for the DINERS mark and similar marks.
registered the domain names <dinerscredit.com> and <dinercredit.com> on
The Response was received by the National Arbitration Forum in hard copy only. The National Arbitration Forum considered the Response to be deficient pursuant to Supplemental Rule 5(a) and ICANN Rule 5. Said Response was supplemented in a letter sent by Respondent to National Arbitration Forum by fax on May 15, 2005.
Because the Response is deficient, the Panel does not have to consider it in making its decision.
Complainant was in no way prejudiced by the deficiency and is in no way prejudiced by admitting the two documents submitted by Respondent. The lack of credibility of many of the statements and arguments made in the Respondent’s submissions if anything assist Complainant’s case. Furthermore Respondent has complained that there were unfair tactics used by Complainant in choosing to file the Complaint during a holiday period and has further complained that Respondent was unsuccessful in the request for a 20 day extension of time for “a personal family medical reason.”
In the circumstances, the Panel has admitted and considered Respondent’s submissions.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar Policy ¶ 4(a)(i).
Complainant claims ownership numerous trademark registrations and pending applications for the trademarks DINERS, DINERS CLUB and DINERS CLUB INTERNATIONAL in jurisdictions world wide. For the purposes of this application it is sufficient that Complainant is the registered owner of and has rights in US registered trademark DINERS, Registration Number 1,462,209 registered since October 20, 1987 in international class 36.
Panel finds that this trademark registration is sufficient for Complainant
to establish rights in the mark pursuant to Policy ¶ 4(a)(i).
See Innomed Techs., Inc. v. DRP Servs.,
FA 221171 (Nat. Arb. Forum
The Panel finds that the domain name <dinerscredit.com> is confusingly similar to Complainant’s DINERS mark. The domain name contains the mark in its entirety and Respondent has merely added the descriptive term “credit.” See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).
The Panel is also satisfied that the domain name <dinercredit.com> is confusingly similar to Complainant’s DINERS mark. The <dinercredit.com> domain name contains the Complainant’s mark in its entirety except for the removal of the letter “s” from the mark and the additional descriptive term “credit.” Such a slight modification to Complainant’s mark coupled with the addition of a term related to Complainant’s credit card services does not create a distinct mark under Policy ¶ 4(a)(i). See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks).
In considering whether a domain name is identical or confusingly similar to a trade mark the generic top-level domain element “.com” may be ignored.
Rights or Legitimate Interests: Policy ¶ 4(a)(ii).
Complainant must first make a prima
facie case that Respondent lacks rights and legitimate interests in the
disputed domain name under Policy ¶ 4(a)(ii), and then
the burden shifts to Respondent to show it does have rights or legitimate
There is no evidence in the record suggesting that Respondent is commonly known by the disputed domain names. The WHOIS information, which lists “Rulator Corp.” as the registrant of the disputed domain names. Complainant has not granted Respondent any license, permission, or authorization to register or use any domain name incorporating Complainant’s DINERS mark.
Complainant has pointed out that these are
factors indicating that Respondent does not have rights or legitimate interests
in the domain names pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish
Country Store, FA 96209 (Nat. Arb. Forum
Respondent is using the <dinercredit.com> domain name to display a directory of sponsored links to third-party web
sites that offer credit card services that directly compete with
Complainant. On the balance of
probabilities Respondent earns click-through fees for each consumer it diverts
to the third-party web sites, and that such use for Respondent’s own commercial
gain does not represent a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) or a legitmate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Complainant alleges that Respondent has not actively used the <dinerscredit.com> domain name for the greater part of the past six years. Complainant contends that only since January 2007 has Respondent displayed a “pretext site” containing one paragraph of static text. Complainant has successfully argued that this does not constitute a demonstrable preparation to use the disputed domain name for a legitimate purpose.
Respondent claims to be using the <dinerscredit.com> domain name to help Respondent’s restaurant business, but provides no information on the existence of the restaurant or how the disputed domain name will help the restaurant.
There is no evidence in the record to support a determination of Respondent’s use of, or demonstrable preparations to use, the <dinerscredit.com> domain name with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitmate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Franzus Co. v. Cotner, FA 125365 (Nat. Arb. Forum Nov. 7, 2002) (determining that after the respondent’s passive holding of the disputed domain name for five years, its “unsupported, self-serving allegations alone are insufficient to establish that Respondent has rights or legitimate interests in respect of the domain name at issue”); see also AT&T Corp. v. Domains by Brian Evans, D2000-0790 (WIPO Sept. 27, 2000) (finding no rights or legitimate interests where the respondent did not provide any documentation on the existence of its alleged company that might show what the company’s business was, or how the company’s years of existence, if it ever existed, might mesh with the complainant’s trademark claims).
While Respondent argues that “dinercredit” and “dinerscredit” are generic terms and in common use and therefore that Complainant does not have an exclusive monopoly on the terms on the Internet, the record indicates that Respondent’s intention in registering both of these domain names was to create an association with Complainant’s services and goodwill.
Respondent is using the <dinercredit.com> domain name to display a directory of sponsored links to third-party web sites that offer credit card services in direct competition to Complainant’s credit card business. Such use of the domain names in the present case cannot constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).
Apparently, the <dinerscredit.com> domain name has been the address of a standard “under construction” page for the first six years. Currently, the disputed domain name displays information explaining how a restaurant patron could barter goods and services in exchange for dining credit at a restaurant. The statement goes as follows:
Get Diners Credit
Hungry for a delicious meal? You can get diners credit anytime when you ask your local restaurant owner how you can help them with services you have to offer in exchange for inders credit toward delicious food. Help your local independent restaurant owners and they’ll help you. Sweep their walk, wash their windows, make yourself available when they’re in a pinch. Its done all the time. Businesses can barter for diners credit anytime in exchange for book keeping, accounting, legal services, advertising and more. Support your local independent restaurants because they support your community. This message was brought to you by DinersCredit.com.”
While it is not beyond the bounds of reason that someone would register a domain name in order to post a statement of that nature for non-commercial purposes, it is highly improbable. In the present case the Panel accepts Complainant’s submissions that the posting is contrived merely for the purposes of these proceedings.
Furthermore, as has been pointed out by Complainant, Respondent has contradicted itself in claiming to be using this posting for the benefit of its restaurant business and at the same time claiming that it is a non-commercial use.
With regard to Respondent’s assertion that it has merely registered and used domain names consisting of generic terms in good faith, the principles to be applied in cases where a registrant relies on the generic character of a dictionary word that is also the registered trade mark are well stated in the decision of the three member UDRP panel in Nat’l Trust for Historic Pres. v. Preston, D2005-0424 (WIPO Aug. 10, 2005) as follows:
“The Panel agrees with the
Respondent that “historic hotels” is a common descriptive term when used in
connection with information, products or services respecting such
establishments. The record reflects several domain names other than the
disputed domain name using the term in its descriptive sense. Even were the Panel
to assume that the Complainant has or will establish trademark rights in this
term, the Policy was not intended to permit a party who elects to register or
use a common term as a trademark to bar others from using the common term in a
domain name, unless it is clear that the use involved is seeking to capitalize
on the goodwill created by the trademark owner. See Match.com, LP v. Bill
Zag and NWLAWS.
A number of Panels have concluded that a respondent has a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of the complainant. See Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc., WIPO Case No. D2004-0843; T. Rowe Price Associates, Inc. v. J A Rich, WIPO Case No. D2001-1044; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031; EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. It is clear, however, that the respondent must be using the domain name not in the trademark sense but in the descriptive sense, to communicate some aspect of the services offered. Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031. And it is well settled that a bona fide offering of goods and services under paragraph 4(c)(i) is not possible under circumstances otherwise evidencing bad faith registration and use of the domain name. See, e.g., First American Funds, Inc. v. Ult.Search, Inc, WIPO Case No. D2000-1840 (for offering under paragraph 4(c)(i) to be considered bona fide, domain name use must be in good faith under paragraph 4(a)(iii)).”
While the words “diner” and “diners” obviously have wider meanings in the English language, in the present case the evidence points to circumstances evidencing bad faith registration and use of the domain names in dispute. Respondent has not used either of these domain names to make a bona fide offering of services. For reasons given below on the balance of probabilities Respondent registered and is using the domain names at issue in bad faith and such registration and use is inconsistent with any rights or legitimate interest in the domain names.
Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).
On the evidence, Respondent is using the <dinercredit.com> domain name to display links to third-party web sites that offer credit cards services, which compete with Complainant’s services. It is probable that Respondent is earning click-through fees for redirecting Internet users to these web sites and is therefore using the disputed domain name to capitalize on Complainant’s goodwill. This amounts to evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also State Fair of Tex. v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website).
Even though Respondent registered the <dinerscredit.com> domain name over six years ago, there is little or no evidence of active use of the domain name until January 2007 and then only to display a one paragraph notice of static text. The Panel is of the view that the notice posted by Respondent is a contrivance for the purposes of these proceedings. Respondent has clearly registered this domain name also for the purposes of taking advantage of Complainant’s reputation and goodwill so as to attract Internet users to this website. It is probable that Internet users are visiting the site because of the confusion caused. This activity amounts to bad faith registration and use of the <dinerscredit.com> domain name under Policy ¶ 4(a)(iii). See Mondich v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that the respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
This Panel is satisfied that on the balance of probabilities, Respondent has intentionally attempted to attract, for commercial gain, Internet users to both of its web sites to which the domain names at issue resolve, by creating a likelihood of confusion with the Complainant's DINERS mark as to the source, sponsorship, affiliation, or endorsement of the web sites. It follows that Respondent has registered and is using both domain names. <dinerscredit.com> and <dinercredit.com> in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the domain names <dinerscredit.com> and <dinercredit.com> be TRANSFERRED from Respondent to Complainant.
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